Ex Parte Cohen et alDownload PDFPatent Trial and Appeal BoardJun 22, 201713620037 (P.T.A.B. Jun. 22, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/620,037 09/14/2012 Peter D. Cohen 120137.491C1 6535 500 7590 06/22/2017 SFFD TNTFT T FFTT TAT PROPFRTY T AW GROT TP T T P EXAMINER 701 FIFTH AVE JEANTY, ROMAIN SUITE 5400 SEATTLE, WA 98104 ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 06/22/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER D. COHEN, DANIEL A. SANDERSON, MIKHAIL SEREGINE, BRETT KIEFER, JANG HAN GOO, and JEFFREY P. BEZOS Appeal 2016-007503 Application 13/620,0371 Technology Center 3600 Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 100—120 and 126—130, which constitute all the pending claims. Final Act. 3—7. Claims 1—99 and 121—125 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as Amazon Technologies, Inc. App. Br. 2. Appeal 2016-007503 Application 13/620,037 STATEMENT OF THE CASE The disclosed and claimed invention relates to facilitating task interactions between requesters who have tasks that are available to be performed and task performers who are available to perform tasks. Abstract; 1—3. Claim 100, reproduced below, is exemplary of the subject matter on appeal: 100. A computer-implemented method comprising: tracking, by one or more configured computing systems of a task fulfillment system, information related to past performance of tasks assigned, by the task fulfillment system via one or more first electronic communications sent from the one or more configured computing systems over one or more computer networks to multiple client devices that are each associated with one of a plurality of task performer users of the task fulfillment system, to multiple of the task performer users; receiving, by the one or more configured computing systems and via one or more second electronic communications sent over the one or more computer networks from a first client device of a task requester user of the task fulfillment system, information from the task requester user about a task that is available to be performed and that has an associated qualification for a task performer user to be eligible to perform the available task; analyzing, by the one or more configured computing systems, the tracked information to determine one or more task performer users of the plurality of task performer users who have the associated qualification based on past performance of one or more other tasks by the one or more task performer users; providing, by the one or more configured computing systems based at least in part on the analyzing and via one or more third electronic communications sent from the one or more configured computing systems over the one or more computer networks to a respective client device of each of the determined one or more task performer users, information about the available task to the determined one or more task performer users; controlling, by the one or more configured computing systems, the performance of the available task by at least one of the determined one or more task performer users by interacting with the at least one 2 Appeal 2016-007503 Application 13/620,037 task performer user via one or more fourth electronic communications sent over the one or more computer networks to one or more client devices associated with the at least one task performer user, the interacting with the at least one task performer user including receiving results of the performance of the available task; and providing, by the one or more configured computing systems via one or more fifth electronic communications sent over the one or more computer networks to the first client device of the task requester user, information from the results of the performance of the available task by the at least one task performer user. App. Br. 28—29. (Claims Appx.). THE REJECTION Claims 100-120 and 126—130 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 3—7 (“the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.”). ANALYSIS The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) for “distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to determine if the claim is directed toward a patent-ineligible concept and, if so, the second step is to determine whether there are additional elements that transform the nature of the claim into a patent eligible application. Id. (citing Mayo, 132 S. Ct. at 1297, 1298). The second step searches for an inventive concept that is sufficient to ensure that 3 Appeal 2016-007503 Application 13/620,037 the patent amounts to significantly more than a patent on the patent- ineligible concept. Id. (citing Mayo, 132 S. Ct. at 1294). Appellants argue (1) the claims are patent-eligible under the streamlined eligibility test; (2) the claims are not directed to an ineligible abstract idea; and (3) even were they assumed arguendo to be directed to an abstract idea, the claims, when viewed as a whole, recite an inventive concept that amounts to significantly more than such an abstract idea. App. Br. 12-27; Reply Br. 4-13. We are not persuaded by argument (1) because the failure, if any, of the Examiner to follow practice and procedure training guidance for examination is only appealable to the extent the Examiner fails to follow the patent statutes and precedential case law. Below, we review Appellants’ arguments, as considered under the patent statutes and applicable controlling case law. Regarding arguments (2) and (3), the Examiner concludes: The claim [100] is similar to the functions of organizing human activities such as creating a contractual relationship as was found in buySafe. ... the steps or functions of tracking, receiving, providing and controlling are similar to concepts that have been identified as abstracts by the courts as found in Classen and Perkin-Elmer which involved functions of collecting and comparing data to determine a risk level. The functions of tracking, receiving, providing, and controlling are similar to concepts that have been identified by the courts as found in Freddie Mac which involved computing a price for the sale of a fixed income asset and generating a financial analysis output. 4 Appeal 2016-007503 Application 13/620,037 The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because: The additional elements when considered both individually and as a combination do not amount to significantly more than the abstract idea. The claim recites the additional elements of one or more configured computing systems over one or more computer networks to multiple client devices[.] These claimed devices are noted to perform routine computer functions such as receiving data, comparing data, matching data, and generating data. The claimed computing system/processor is seen as a generic computer performing generic functions without an inventive concept as such do not amount to significantly more. These devices are simply a field of use that attempt to limit the abstract idea to a particular environment. The type of data being manipulated does not impose meaningful limitations. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Therefore the claim does not amount to significantly more than the abstract idea itself. The claim is not patent eligible. The dependent claims when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. [§] 101 because the additional recited limitations fails to establish that the claims are not directed to an abstract idea. Ans. 8—10. Appellants contend the Examiner fails to establish a prima facie case and instead relies on unsupported opinion. App. Br. 13—15. According to Appellants, “the Office bears the initial burden of factually supporting any prima facie conclusion” and “[i]f the Office does not set forth sufficient factual evidence to discharge the requirement to set forth a prima facie case, 5 Appeal 2016-007503 Application 13/620,037 the applicant is under no obligation to submit evidence to traverse the unsubstantiated allegation.” Id. at 15. We are not persuaded by this argument because it is not relevant to whether the Examiner has given Appellants a reasonable notice as to the basis of the § 101 rejection. The notice requirement is set forth by 35U.S.C. § 132. [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant ... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990). In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Appellants further argue “the claims are not directed to an algorithm, a mathematical formula, or a fundamental economic practice-which are the only three exceptions to subject matter eligibility that the Supreme Court has positively identified” and “[ijndeed, the claims here are unlike any of the claims in the cases cited by the Office in support of its rejection.” App. Br. 15-16. Appellants also argue the particular elements of the claims demonstrate the claims are not directed to a mere abstract idea. Id. at 17. For example, Appellants refer to claim 100 “tracking” limitation and highlight, inter alia, additional limitations “configured computing systems of a task fulfilment system, information related to past performance of tasks assigned. ... to multiple devices . . . .” Id. 6 Appeal 2016-007503 Application 13/620,037 Appellants argue the dependent claims include additional elements that establish such claims are not directed to an abstract idea and, as in the rejection of the independent claims, discussed supra, the Examiner presents no evidentiary support for the conclusory statement regarding that the claims are directed to an abstract idea. App. Br. 20-22 (citing dependent claims 108 and 130). Appellants further argue the claims recite an inventive concept that amounts to significantly more than an abstract idea and the Examiner has not performed the proper inquiry as to the claim as a whole nor provided evidence or documentation. App. Br. 22—26. According to Appellants, the claims are not subject to any art-based rejection which indicates the recitations of the claim elements cannot be generic, well understood while also being novel and non-obvious. Id. at 24. Appellants argue each of the independent claims solve a technological problem “to coordinate multiple electronic network communications in order to determine eligible task performer users for tasks based on specified qualifications, and to utilize such network communications to control performance of those tasks.” Id. 24 (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981). According to Appellants: Furthermore, each of the pending independent claims 100, 113 and 126 improves another technology or technical field (e.g., task exchange and fulfillment), improves the functioning of a particular device (e.g., a task exchange server), and adds meaningful limitations beyond generally linking the purported abstract idea of "providing information about [an] available task to the determined one or more task performer users" to a particular technological environment. Id. at 24—25. 7 Appeal 2016-007503 Application 13/620,037 Appellants argue that the claims that are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” such as the Internet do not recite an abstract idea as they address problems specific to such a networked environment. Id. at 25 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). According to Appellants, the rejected claims are much like those found patentable in DDR. Id. Appellants further argue, in contrast to the claims in Alice, the rejected claims do not preempt use of all solutions involving the concept of “providing information about [an] available task to the determined one or more task performer users, as evidenced by the prior art references previously cited by the Office itself.” Id. at 26. In the Reply Brief, Appellants argue the pending claims are directed to improving automated operations of a computer-implemented system, in a manner analogous to recent cases. Reply Br. 4—6 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appellants argue the Examiner errs in concluding the claims are merely directed to “facilitating interactions between task requesters who have tasks that are available to be performed and task performers who are available to perform tasks” and “organizing human activities such as creating a contractual relationship.” Id. at 4—5. Instead, Appellants argue the claims are directed to: [Ajutomated operations for a computer-implemented task fulfillment system to control how available tasks are completed in a manner that improves the efficiency of the task fulfillment 8 Appeal 2016-007503 Application 13/620,037 system and its task performance, including by tracking and analyzing information about prior task performance to determine task performer users that are qualified to perform current tasks. Id. at 5—6. According to Appellants, the claims are analogous to claims found to be patent eligible in Enfish. Id. at 6. In the Reply Brief, Appellants also argue the rejected claims are related to substantially more than merely “organizing human activities” or “facilitating interactions between users,” in a manner analogous to the Bascom Case. Reply 8—11 (citing Spec. Tflf 2—8, 24, 26, 31, 41—42, 141—142, 152). According to Appellants: Thus, in a manner analogous to Bascom, the combination of elements implementing such automated operations enable the computer-implemented centralized online task fulfillment system to perform its automated operations more efficiently and accurately, by controlling performance of tasks to be performed by users whose historical performance of other tasks demonstrates a sufficient proficiency to be qualified to perform a current task. As such, the actual recited claim language of the claims goes far beyond merely 'organizing human activities to create a contractual relationship' or 'facilitating interactions' between users as is alleged. Id. at 17. Appellants challenge the Examiner’s articulation of what the claims are directed to, but the challenge is unfounded. See App. Br. 4—13; Reply Br. 4—13. For example, the fact that the claims are drafted to include a computing environment is not dispositive. The question is not whether claims mention a computing environment but what they are “directed to.” 9 Appeal 2016-007503 Application 13/620,037 [T]he “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring into “the focus of the claimed advance over the prior art”). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). Taking claim 100 as representative, the claim sets forth six steps: (1) tracking past performance of tasks by task performers; (2) receiving from a task requester information about a task to be performed and an associated qualification for a task performer; (3) analyzing the tracked information to determine task performers with the associated qualification; (4) providing the tracked information to the determined task performers information about the task; (5) controlling the performance of the task by the task performer and receiving results of the performance of the task; and (6) providing to the task requestor, information from the results of the performance by the task performer. 10 Appeal 2016-007503 Application 13/620,037 Although the claim may additionally recite computer related elements (e.g., “computing systems, task fulfillment system, electronic communications, computer networks, client devices, . . .), we agree with the Examiner that the claim is directed to “facilitating interactions between task requesters who have tasks that are available to be performed and task performers who are available to perform tasks” and “organizing human activities such as creating a contractual relationship.” The Specification supports this view. Spec. Abstract, || 2, 24. Also, the Specification presents insufficient support that the computer related elements are anything other than conventional and generic. See also Ans. 11—14. We note further that Appellant’s interpretation regarding abstract ideas is directed to “automated . . .” and refers to no automation element in the claims. Id. at 6. Regarding Appellants’ argument that the lack of an art- based rejection indicates the claim elements cannot be generic is speculation and contrary to the record before us. Moreover, we conclude each of Appellants’ claims on appeal is distinguishable from the type of claim considered by the court in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and Bascom. We conclude none of Appellants’ claims is “directed to an improvement in the functioning of a computer,” as was found by the court regarding the subject claim in Enfish, 822 F.3d at 1338. To the extent that the recited steps or acts may be performed faster or more efficiently using a computer, our reviewing court provides applicable guidance: While the claimed system and method certainly purport to accelerate the process of analyzing audit log data, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented method itself See Bancorp 11 Appeal 2016-007503 Application 13/620,037 Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (emphasis added). See also Electric Power Grp., 830 F.3d at 1350, to the extent that Appellants’ claims similarly collect information, analyze it in some fashion, and present or communicate the result. The Court in Electric Power guides: “we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” 830 F.3d at 1354 (internal citations omitted). Applying this reasoning to Appellants’ claims on appeal, we similarly find any purported faster or more efficient performance of the claimed steps or acts merely comes from the capabilities of a general-purpose computer and/or computer related elements, rather than from Appellants’ claimed steps or functions. Moreover, regarding Appellants’ argument that the subject matter of the claims is similar to claims found patentable that are “necessarily rooted in computer technology,” Appellants’ reliance on DDR (App. Br. 25) and other cited cases is misplaced. For example, in DDR, the claims at issue involved, inter alia, “web pages displays [with] at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants” (claim 1 of US 7,818,399). There is no such web page with an active link in the claims here before us. The Specification supports the view that the computer related elements of claims 12 Appeal 2016-007503 Application 13/620,037 100, 113, and 126 are generic and do not constitute an inventive concept. See discussion, supra. We appreciate that the claims provide for a specific approach to “facilitating interactions between task requesters who have tasks that are available to be performed and task performers who are available to perform tasks” and “organizing human activities such as creating a contractual relationship.” But the specifics rest not so much in any underlying computer technology but in practicing the resulting particular scheme itself. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). “Generally, a claim that merely describes an ‘effect or result dissociated from any method by which [it] is accomplished’ is not directed to patent-eligible subject matter.” Id. at 1244 (alteration in original) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)). The patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems. [McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”).] Essentially, the claims are directed to certain functionality— here, the ability to generate menus with certain features. Alternatively, the claims are not directed to a specific improvement in the way computers operate. Cf. Enfish, 822 F.3d at 1335—36. Id. at 1241. Applying the first step of Alice, we are not persuaded by Appellants’ arguments that claims 100, 113, and 126 are not directed to abstract ideas and therefore agree, with the Examiner’s legal conclusion that these claims are directed to non-statutory subject matter. Accordingly, we conclude the 13 Appeal 2016-007503 Application 13/620,037 claims are directed to a patent-ineligible concept. Step 2 of the analysis considers whether the claims contain an inventive concept such as additional limitations that narrow, confine or otherwise tie down the claim so that it does not fully cover the abstract idea itself. See Alice, 134 S. Ct. at 2357. Here, we agree with the Examiner that no inventive concept is present. In particular, the hardware and computer-related features are the type of generic element that has been determined to be insufficient by the Supreme Court to transform a patent-ineligible claim into one that is patent-eligible. See id. The claims include no limitations that prevent it from covering the abstract idea itself. We also agree, for the same reasons, discussed supra, with the Examiner’s conclusions regarding dependent claims 108 and 130. Final Act. 10. In view of the above, we sustain the rejection of claim 100, independent claims 113 and 126, which recite similar limitations as claim 100 and are argued together with claim 100, and the rejection of dependent claims 108 and 130. We also sustain the rejection of dependent claims 101— 107, 109-112, 114—120, and 127—129 as these claims are not argued separately. DECISION We affirm the Examiner’s decision rejecting claims 100—120 and 126-130 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(IV). AFFIRMED 14 Copy with citationCopy as parenthetical citation